The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom (“UK”).
The Respondent is Vu Tuyen Hoang, Tuyen Hoang, Viet Nam.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 10, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 10, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on November 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2021. The Respondent did not submit any response. The Center received the Respondent’s communication by email on November 27, 2021. On December 17, 2021, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Keiji Kondo as the sole panelist in this matter on December 26, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is an online graphic design platform provider founded in 2012. The online platform is easy-to-use, intuitive and utilizes a “drag-and-drop” methodology. As a result, the Complainant’s services have achieved significant reputation and acclaim. The Complainant has been valued at USD 6 billion as of June 2020, and currently has more than 30 million active users per month with customers in 190 countries. The Complainant offers services from its main website, “www.canva.com”. The Complainant’s online platform is available in approximately 100 languages, including Vietnamese.
The Complainant holds a number of registered trademarks for the CANVA term, including Australian Trademark Registration No. 1483138 for class 9, which covers, among others, “computer programmes (programs) and recorded software distributed online”. The Complainant’s Australian trademark registration was registered on March 29, 2012.
The disputed domain names are
The disputed domain names incorporate the Complainant’s distinguished CANVA mark clearly and exactly and are only preceded by the terms “hello” and “hoc” respectively. The Complainant further submits that “hoc” in
Where the relevant trademark is recognizable, the addition of other terms within a domain name, whether descriptive, geographical, pejorative, meaningless, or otherwise, should not prevent a finding of confusing similarity under the first UDRP element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain names should also be disregarded, as this is a standard registration requirement (see WIPO Overview 3.0, section 1.11).
Given the above, the Complainant submits that it should be concluded that the disputed domain names are confusingly similar to the Complainant’s CANVA mark for the purposes of satisfying paragraph 4(a)(i) of the Policy.
To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for “canva”, “hellocanva” or “hoccanva”. The Complainant also cannot find any evidence to suggest that the Respondent holds unregistered rights in any of these terms. Moreover, the Respondent has not been licensed by the Complainant to use domain names that feature its CANVA trademark.
At the time of sending cease and desist correspondence,
The Respondent is not known, nor has ever been known, by the distinctive CANVA mark, nor by the terms “hellocanva” or “hoccanva”. As emphasized above, the Respondent has no connection or affiliation with the Complainant and has not received license or consent to use the CANVA mark in any way.
The Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the CANVA mark. The Respondent lacks rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy.
The Complainant’s earliest CANVA trademark predates the registration of the disputed domain names by more than eight years. Additionally, all top Viet Nam-based (where the Respondent appears to be located) Google search results for the CANVA term pertain to the Complainant’s offerings. It is therefore clear that the simplest of Internet searches would have otherwise revealed to the Respondent the Complainant’s established rights in the CANVA mark.
The Respondent’s selection of the term “hoc” in particular, juxtaposed with the CANVA mark in
The Complainant sent cease and desist correspondence to the Respondent on August 12, 2021 and August 19, 2021. The Respondent did not reply to either communication, which constitutes further evidence that it knowingly acted in bad faith (see Sanofi v. Domain Administrator, See PrivacyGuardian.org / onlinestore, willam jhonson,WIPO Case No. D2019-2846 in which the adjudicating panel stated that the respondent’s failure to respond to a cease and desist letter sent by the complainant “further reinforces the inference of bad faith registration and bad faith use”).
The Respondent used the disputed domain names in bad faith prior to notice of the Complaint. The Respondent’s non-use of the disputed domain names effectively amounts to bad faith use for the purposes of the Policy under a passive holding contention.
Both the disputed domain names clearly comprise, in full, the Complainant’s internationally distinctive and renowned CANVA mark. The Complainant has numerous registered and applied for trademarks for this term, as both a word mark and logo, and these cover many territories. Given the ease with which any Internet user can find the Complainant’s CANVA mark online, it is inconceivable that the Respondent should not have been aware of the Complainant’s rights in this term.
The Respondent has not provided any evidence of actual nor contemplated good faith use of the disputed domain names. In particular, the Complainant could not find any evidence that either of the disputed domain names have been used to resolve to active sites. The Respondent’s failure to respond to the Complainant’s cease and desist correspondence further suggests it cannot provide evidence that it has used, or plans to use, the disputed domain names in any bona fide manner.
Finally, the Complainant submits that the Complainant’s mark is “well-established, distinctive, and fanciful” and it is clear that the confusing similarity between the CANVA mark and disputed domain names prohibits any potential good faith use by the Respondent. In view of the foregoing, bad faith registration and use under paragraph 4(a)(iii) of the Policy should be found.
B. RespondentThe Respondent did not reply to the Complainant’s contentions substantively. On November 27, 2021, the Respondent sent an email in English to the Center, soliciting a plan for settlement. However, the Parties did not reach a settlement.
6. Discussion and Findings 6.1. Language of the ProceedingIn its email transmitted to the Center on November 8, 2021, the Registrar confirmed that the language of the Registration Agreement is Japanese. The Complainant requested that English be the language of the proceeding in the Complaint, and confirmed its request in the communication to the Center on November 10, 2021. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:
- The Complaint was filed in English;
- The Complainant is an Australian entity, and represented by a UK law firm;
- The Respondent’s address is in Viet Nam;
- English is used on the websites at the disputed domain names;
- On November 10, 2021, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding, but the Respondent did not comment on the language of the proceeding;
- The Respondent sent an email written in English to the Center, soliciting a plan for settlement;
- One of the disputed domain names contains an English word “hello”, suggesting that the Respondent has some ability to communicate in English; and
- Ordering the translation of the Complaint would only result in extra delay of the proceeding and additional cost for the Complainant.
6.2. Substantive Issues A. Identical or Confusingly SimilarThe Complainant owns a number of trademark registrations for CANVA, including Australian Trademark Registration No. 1483138. The disputed domain name
In the disputed domain names, the part “canva” is clearly recognizable, as “hello” is an English word, and “hoc” may perhaps be a substitute for “học”, a Vietnamese word meaning “learn”. As an alternative interpretation, “hoc” could be a Vietnamese word meaning “school” according to Google translation. Therefore, the part “canva” naturally attracts attention of Internet users.
It is well-established that the gTLD “.com” should be disregarded in finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsNeither of the disputed domain names resolves to a webpage that convey any meaningful message or information. Such a use can be considered neither as a use of the disputed domain names in connection with a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy, nor as noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
The Respondent’s name, Vu Tuyen Hoang, has no similarity to the Complainant’s trademark CANVA. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. Moreover, the Respondent did not reply to the Complaint’s contentions substantively, though he sent an email to the Center, impliedly acknowledging receipt of the Complaint.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name
Other than the corporate name and the trademark of the Complainant, CANVA does not have any meaning found in dictionaries in Japanese, English or any other language. On the other hand, since the Complainant provides an online graphic design platform, many Internet users can recognize the Complainant’s trademark CANVA. Therefore, the Panel concludes that the Respondent intentionally chose the disputed domain names to attract attention of Internet users, getting a free-ride on the goodwill of the Complainant’s trademark. The Panel finds that the disputed domain names were registered in bad faith.
The Respondent does not use the disputed domain names in any active manner. The Respondent’s non-use of the disputed domain names effectively amounts to bad faith use for the purposes of the Policy under a passive holding contention. Therefore, the Panel finds that the disputed domain names are being used in bad faith.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Keiji Kondo
Sole Panelist
Date: January 9, 2022